DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 16/622,910, filed on October 30, 2020.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on September 16, 2024 has been considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16-24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 16 recites the limitation “-0.500 < f1/fF < 0.700” in line 16, wherein fF, in line 21, is defined as “fF: a focal length of the F lens group”. There is insufficient antecedent basis for this limitation (the F lens group) in the claim. In an effort to provide compact prosecution, the examiner has interpreted “fF” as the focal length of any lens group that performs a focusing function.
With regard to dependent claims 17-23, claims 17-23 are rejected as they depend, directly or indirectly, from independent claim 16 and therefore inherit all of the deficiencies of the claim from which they depend.
Claim 24 recites the limitation “-0.500 < f1/fF < 0.700” in line 19, wherein fF, in line 24, is defined as “fF: a focal length of the F lens group”. There is insufficient antecedent basis for this limitation (the F lens group) in the claim. In an effort to provide compact prosecution, the examiner has interpreted “fF” as the focal length of any lens group that performs a focusing function.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 16, 21 and 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6 of U.S. Patent Number 12,124,018. Although the claims at issue are not identical, they are not patentably distinct from each other because both claim a zoom optical system as outlined below:
U.S. Patent Application 18/886111
U.S. Patent Number 12,124,018
Claim 16
A zoom optical system comprising, in order from an object,
a first lens group having negative refractive power,
a second lens group having positive refractive power,
and a rear lens group,
wherein lens groups forming the first lens group, the second lens group, and the rear lens group are arranged such that upon zooming, respective distances between the lens groups adjacent to each other change, upon zooming from a wide-angle state to a telephoto state, the distance between the first lens group and the second lens group decreases,
the rear lens group comprises a third lens group having positive refractive power, which is disposed closest to an object in the rear lens group,
[the zoom optical system further comprises a F lens group which is moved upon focusing,]
and the following conditional expressions are satisfied:
−0.500<f1/fF<0.700
1.000<Bfw/fw<2.000
0.100<−f1/f2Rw<0.600
where
f1: a focal length of the first lens group,
fF: a focal length of the F lens group,
Bfw: back focus of the zoom optical system in a wide angle end state,
fw: a focal length of the zoom optical system in the wide angle end state, and
f2Rw: a composite focal length of the second lens group and the rear lens group in a wide angle end state.
Claim 21
The zoom optical system according to claim 16, wherein the following conditional expressions is satisfied:
-1.000 < -f1/fRw < 0.600
where fRw: a focal length of the rear group in a wide angle end state.
Claim 1
A zoom optical system comprising, in order from an object,
a first lens group having negative refractive power,
a second lens group having positive refractive power,
and a rear lens group,
wherein lens groups forming the first lens group, the second lens group, and the rear lens group are arranged such that upon zooming, respective distances between the lens groups adjacent to each other change, upon zooming from a wide-angle state to a telephoto state, the distance between the first lens group and the second lens group decreases,
the rear lens group comprises a third lens group having positive refractive power, which is disposed closest to an object in the rear lens group,
the zoom optical system further comprises a F lens group which is moved upon focusing,
and the following conditional expressions are satisfied:
−0.500<f1/fF<0.700
1.000<Bfw/fw<2.000
−1.000<−f1/fRw<0.600
where
f1: a focal length of the first lens group,
fF: a focal length of the F lens group,
Bfw: back focus of the zoom optical system in a wide angle end state,
fw: a focal length of the zoom optical system in the wide angle end state, and
fRw: a focal length of the rear lens group in a wide angle end state.
Claim 6
The zoom optical system according to claim 1, wherein the following conditional expression is satisfied:
0.100<−f1/f2Rw<1.600
where f1: a focal length of the first lens group, and f2Rw: a composite focal length of the second lens group and the rear lens group in a wide angle end state.
Claim 24
A method for manufacturing a zoom optical system comprising, in order from an object, a first lens group having negative refractive power, a second lens group having positive refractive power, and a rear group, the method comprising a step of disposing the first lens group, the second lens group and the rear group in a lens barrel so that: lens groups forming the first lens group, the second lens group, and the rear group are arranged such that upon zooming, respective distances between the lens groups adjacent to each other change, upon zooming from a wide-angle state to a telephoto state, the distance between the first lens group and the second lens group decreases, the rear group comprises a third lens group having positive refractive power, which is disposed closest to an object in the rear group, and the following conditional expressions are satisfied:
-0.500 < fl/fF < 0.700
1.000 < Bfw/fw < 2.000
0.100 < -f1/f2Rw < 0.600
where f1: a focal length of the first lens group, fF: a focal length of the F lens group, Bfw: back focus of the zoom optical system in a wide angle end state, fw: a focal length of the zoom optical system in the wide angle end state, and f2Rw: a composite focal length of the second lens group ani the rear group in a wide angle end state.
Claim 1
A zoom optical system comprising, in order from an object, a first lens group having negative refractive power, a second lens group having positive refractive power, and a rear lens group, wherein lens groups forming the first lens group, the second lens group, and the rear lens group are arranged such that upon zooming, respective distances between the lens groups adjacent to each other change, upon zooming from a wide-angle state to a telephoto state, the distance between the first lens group and the second lens group decreases, the rear lens group comprises a third lens group having positive refractive power, which is disposed closest to an object in the rear lens group, the zoom optical system further comprises a F lens group which is moved upon focusing, and the following conditional expressions are satisfied:
−0.500<f1/fF<0.700
1.000<Bfw/fw<2.000
−1.000<−f1/fRw<0.600
where f1: a focal length of the first lens group, fF: a focal length of the F lens group, Bfw: back focus of the zoom optical system in a wide angle end state, fw: a focal length of the zoom optical system in the wide angle end state, and fRw: a focal length of the rear lens group in a wide angle end state.
Claim 6
The zoom optical system according to claim 1, wherein the following conditional expression is satisfied:
0.100<−f1/f2Rw<1.600
where f1: a focal length of the first lens group, and f2Rw: a composite focal length of the second lens group and the rear lens group in a wide angle end state.
Allowable Subject Matter
Claims 17-20 , 22 and 23 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARRYL J COLLINS whose telephone number is (571) 272-2325. The examiner can normally be reached M-Th 5:30 a.m. - 4:00 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky L Mack can be reached at 571-272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DARRYL J COLLINS/Primary Examiner, Art Unit 2872
23 June 2026
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